The UK left the EU on January 31, 2020, and is currently in the Brexit Transition Period. This will
end at 11pm on December 31, 2020, – defined in legislation as “IP Completion Day”.
The expiry of the Transition Period on December 31, 2020, will impact the protection of trade marks
and designs in the EU and the UK in many ways, and is set out in UK legislation to a large degree.
Some key points are summarized below.
What happens to EU Trade Mark (EUTM) Registrations after IP Completion Day?
For every EUTM registration in force as at December 31,
2020, an equivalent UK “comparable” right will be created
automatically on January 1, 2021. There will be no fee payable
The UK comparable right will maintain the exact protection
currently enjoyed by its “parent” EU registration in the UK.
Specifically, the UK comparable right will:
- Be recorded on the UK trade mark register.
- Have the same legal status as if it had been applied for and registered under UK law.
- Keep the original EUTM filing date.
- Keep the original UK priority and/or seniority dates.
- Be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM.
The UK IPO will not issue any certificates of registration for
UK comparable rights either in paper or in electronic form,
but details of the new rights will appear on the UK IPO’s
database. The UK IPO intends to publish a notice on its
website advising the owners of EU registrations that they
own comparable UK rights.
UK comparable rights will be slightly re-numbered – they will
keep the last eight digits of their existing (EU) registration
numbers, but the prefix “UK009” will be added.
Owners of EUTM registrations will have the opportunity to opt
out of owning comparable UK rights in certain circumstances.
However since these will expire in due course if not renewed,
it is expected that absent any issues on use/potential non-use
revocation or agreements restricting UK rights for example, the
vast majority of brand owners will take a “passive” approach
and simply accept UK comparable rights.
Examples of when it will not be possible to opt out are where
the comparable UK right:
- Has been used in the UK.
- Has been assigned or licensed or is the subject of an agreement.
- Is the basis of litigation against a third party
Opt out requests will need to confirm that notice has been
given to anyone with an interest in the UK comparable right (for
example, a licensee). If the UK IPO considers that an opt out
request has been exercised in circumstances where it was not
allowed, it will be able to reinstate the UK comparable right.
What about Protected EU Designations of International Registrations?
It is important to note that UK comparable rights created
from EU designations of International Registrations will not
form part of an International Registrations after December 31,
2020, – instead they will be standalone UK national rights and
so will need to be renewed independently of the International
Registration they are based on. Specifically, each new UK right
arising from a protected (ie registered) EU Designation of an
- Will be treated as if applied for and registered under UK law.
- May be challenged, assigned, licensed or renewed separately from the original International Registration.
- Have the same filing date, priority date and registration date as the International Registration.
- Have the same renewal date as the International Registration.
UK comparable rights arising from protected (i.e. registered)
EU designations of International Registrations will have the
Owners of International Registrations will also have the
opportunity to opt out of owning UK comparable rights in
certain circumstances as noted above. Again however, since
these will expire in due course if not renewed, it is expected that
the vast majority of brand owners will take a “passive” approach
and simply accept comparable UK rights unless there are
concerns as noted above.
What happens to EUTM Applications after IP Completion Day?
Where an EUTM application is pending as at December 31,
2020, the owner of that EUTM application will have 9 months
(ending on September 30, 2021) to “opt in” for an equivalent UK
application, claiming the same filing / priority / seniority dates
as the EU application.
The UK IPO will not send any notification of the right to opt in
for an equivalent UK mark to the owners of EU applications, so
this 9 month period will need to be monitored. The usual UK
IPO fees payable for UK trade mark applications will apply, £170
for one class of goods or services, and £50 for each additional
class, as well as attorney fees.
There could well be priority-type scenarios where equivalent UK
applications which are opted in between January 1, 2021, and
September 30, 2021, take precedence over new UK applications
filed during the same period, because the former conform to EU
applications with earlier pre-January 1, 2021, filing dates.
As an EU application filed now will not achieve registration by
December 31, 2020, we advise that where an EU application is
now filed, a corresponding UK application should also be filed,
particularly if the UK is a key market. A UK application filed now
will achieve registration more quickly than an equivalent UK
application post-December 31, 2020.
EUTM applications which are currently pending should also be
reviewed and consideration given to filing corresponding UK
applications now if it is necessary to obtain a UK registration
sooner rather than later, for example, for potential enforcement
purposes, or if the UK is the home market, or ahead of a UK
What about pending EU Designations of International Registrations?
Again, there will be a 9 month period (ending on September 30,
2021) for owners of pending EU Designations of International
Registrations to “opt in” for equivalent UK applications, claiming
the same priority / filing / seniority dates. Further filing fees will
Certification and collective marks
In line with conventional trade marks, the UK IPO will create UK
comparable rights for all EU certification and collective trade
marks registered at the EUIPO as at IP Completion Day.
However, the UK IPO will not automatically import, onto the
UK register, the regulations governing use of the certification
or collective EUTM when creating UK comparable rights, nor
will the UK IPO request the registered owner to provide an
English translation of the regulations (if not in English already)
immediately after January 1, 2021.
Instead, the UK IPO will contact the owner of the UK
comparable right if and when the regulations need to be
inspected, for example if the UK comparable right becomes the
subject of proceedings. At that point, an English translation will
also be requested if necessary and if that is not filed, the UK
comparable right will be lost.
Licences, security interests and assignments
Currently, any licences or security interests recorded against
an EU registration will not automatically be recorded against
the UK comparable right. Instead, the UK IPO will extend
the period for recordal on the UK register by 12 months from
January 1, 2021.
There are several reasons for this extended period – first, UK
law does not require that licences and security interests be
recorded, but doing so within 6 months of the transaction
provides some rights/protection which are not available in
the absence of recordal; and secondly, applications to record
licences and security interests against UK comparable rights
cannot be filed before those rights are created in any case.
On assignments: where an EUTM has been assigned before
January 1, 2021, but the assignment has not been recorded on
the EUIPO register, the UK comparable right will be granted in
the assignor’s name. Both the assignor and assignee will be
able to apply for registration of the assignment against the UK
comparable right after January 1, 2021.
Interpretation of licences and other contractual agreements
such as co-existence agreements referencing the EU as a
territory, but not including the UK as a separate territory, is a
complex area and we recommend that advice be sought on
this, in the context of the licence/co-existence agreement,
ahead of IP Completion Day. New agreements should refer to
the EU and the UK as separate territories.
When do UK comparable rights need to be renewed?
EU Registrations with renewal dates on or
before December 31, 2020
Where the renewal date of the EU registration falls on or before
December 31, 2020, and the EU registration is renewed by that
date, then the UK comparable right will not need to be renewed
until the next renewal date – so, if the renewal date of the EU
registration is November 30, 2020, and it is renewed by that
date or by December 31, 2020, the UK comparable right will not
be due for renewal until November 30, 2030, in line with the
next renewal date of the EU “parent” registration.
If however the EU registration in the example above is not
renewed by November 30, 2020, (or December 31, 2020), it will
automatically result in a UK comparable right but with a status
of “expired” and continued effect in the UK will depend on late
renewal at the EUIPO during the 6 month grace period from the
renewal date – so, by May 30, 2021, in the example above.
Where an EU registration due for renewal by December 31,
2020, is not late renewed, the UK comparable right (created on
January 1, 2021) will be removed from the UK register when the
corresponding EU registration expires, but with effect from January
1, 2021, – so, in effect, it will never be a UK comparable right.
EU Registrations with renewal dates between
January 1, 2021 and June 30, 2021
Conversely, where the renewal date of the EU registration falls
on or after January 1, 2021, a renewal fee will need to be paid to
the UK IPO to maintain the UK comparable right. Specifically,
where the renewal date of the UK comparable right falls
between January 1, 2021, and June 30 2021, the UK IPO will
send a renewal reminder to the owner on the actual renewal
date of the UK comparable right (or as soon as practicable
The reminder will state that the UK comparable right has
expired and set a new 6 month period for renewal. In effect, this
will be a late renewal period but the UK IPO are not intending
to charge late renewal fees.
If the UK comparable right is not renewed during the 6 month
period set by the UK IPO, it will be removed from the UK
register but can be restored within the following 6 months if the
conditions set by existing UK law are met.
The additional 6 months for renewal of UK comparable rights
mean that the latter will be relevant throughout 2021, not least
for clearance searches and oppositions.
Comparable UK rights that expire more than 6
months after January 1, 2021
The UKIPO will send a renewal reminder 6 months before the
expiry date and normal UK renewal processes will apply.
EUTM registrations reinstated after January 1, 2021
EUTMs can, in certain circumstances, be reinstated if they have
been struck off the EU register, typically for non-renewal in the
case of registrations. However, UK comparable rights will only
be created from EUTMs which are (actively) registered on IP
Completion Day. This means that EUTMs not registered on
December 31, 2020, but which could be reinstated will not give
rise to UK comparable rights.
To address this and bearing in mind that reinstatement is
possible only if an application is made to the EUIPO within
1 year of the missed deadline, EUTM registrations reinstated
after January 1, 2021, and notified to the UK IPO will result in
UK comparable rights. The UK IPO should be notified within 6
months of reinstatement.
Where pending EU applications are reinstated after January 1,
2021, and have a filing date pre-January 1, 2021, the owners will
be allowed to file a UK trade mark application claiming the earlier
EUTM filing/priority date. Such applications are to be filed within 9
months beginning with the date on which the corresponding EU
application was restored to the EU register.
An EUTM which is refused or withdrawn can be converted into
a national UK right provided that the application for conversion
is filed at the EUIPO within 3 months of the EUTM ceasing to
have effect. The resulting UK trade mark has the same filing/
priority and seniority dates.
It is anticipated that on January 1, 2021, there will be some
EUTMs which are within the 3 month conversion period. Any
such EU registrations will not automatically give rise to UK
comparable rights however but the UK IPO intends to allow
conversion of EUTMs (registrations and applications) where
an EUTM has been refused or withdrawn less than 3 months
before January 1, 2021.
Requests for conversion into UK trade marks will be made by
filing UK applications claiming the earlier filing/priority date of
the refused or withdrawn EUTM.
What happens to pending EUTM oppositions?
An EUTM opposition based only on UK rights and pending
on December 31, 2020, will fall away/conclude and the
opposed EUTM will proceed to registration. If the owner of
the EUTM opts in for an equivalent UK application between
January 1, 2021, and September 30, 2021, that UK application
will be published for opposition purposes in due course
and could be opposed in the UK based on the same UK
rights that formed the basis of the EUTM opposition.
Watching services are likely to become of greater
importance in such circumstances.
Where an EUTM opposition is based on UK rights plus an
EUTM and/or a national trade mark in an EU member state,
the UK rights will fall away and the EUTM opposition will
continue based on the EUTM and/or national trade mark in
an EU member state. Again, if the owner of the EUTM opts in
for an equivalent UK application between January 1, 2021 and
September 30, 2021, that UK application will be published for
opposition purposes and could be opposed in the UK based
on the same UK rights on which the EUTM application was
opposed. Again, watching services are likely to become of
greater importance in such circumstances.
An EUTM opposition based on another EUTM and/or a national
trade mark in an EU member state will not be affected by Brexit
but of course, the owner of the opposed EUTM application will
be able to opt in for an equivalent UK application and that UK
application could be opposed based on UK rights only.
What happens to pending cancellation actions against EUTM registrations?
Where an EUTM registration is subject to a pending revocation
or invalidity action (collectively “cancellation action”) on
December 31, 2020, including by way of a counter-claim, the
EUTM will automatically become a UK comparable right, but:
- Where the cancellation is based on a UK right only, the EU action will fall away/conclude but a new UK cancellation action may be possible against the UK comparable right.
- Where the cancellation is based on a UK right and/or an EUTM and/or a national trade mark in an EU member state, the EU action will continue and a total or partial cancellation of the EUTM will equally apply to the UK comparable right,unless the grounds for cancellation do not apply in the UK – this contrasts with the position on EU oppositions which, as noted above, will fall away to the extent that they are based on UK rights. It also means that a separate cancellation action will not have to be filed against the UK comparable right resulting from the EUTM which is the subject of cancellation proceedings on IP Completion Day.
The UK IPO will not automatically be notified of cancellation
actions applicable to UK comparable rights but will need
to “receive notice” or “otherwise become aware” of such
actions. Unsurprisingly therefore, it will be possible for any
person to notify the UK IPO by way of a “cancellation notice”
requesting equivalent cancellation of the UK comparable right,
and attaching a copy of the decision cancelling the EUTM
(including any decision determined on appeal) along with a
statement that the decision has become final. The owner of the
UK comparable right will be allowed to contest a cancellation
notice by filing a “derogation notice” setting out why there
should not be equivalent cancellation of the UK comparable
right and filing supporting evidence.
Owners of EUTM registrations which are totally or partially
cancelled may themselves file cancellation notices at the
UK IPO as part of their portfolio management and in such
cases, they should also file derogation notices and supporting
evidence at the same time.
What about pending UK oppositions and pending cancellations based on EUTMs?
These will continue at the UK IPO (or UK courts)
notwithstanding Brexit, based on the law as it applied prior
Use and reputation
UK law requires an uninterrupted period of 5 years’ non-use
before a UK trade mark registration becomes vulnerable to nonuse
In the context of Brexit, use of an EUTM anywhere in the
EU prior to December 31, 2020, will count as use of the UK
Where the 5 year period includes time before IP Completion
Day, use in the EU prior to December 31, 2020, will be relevant.
In all cases (whether EU use is relevant or not), the 5 year
period of suspended use is activated by the last use of the
EUTM or UK comparable right.
The same considerations as set out above apply for reputation.
Community designs will be treated similarly to EUTMs. Please
contact us if you would like further details.